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Flashpoints in 3D Printing and Trade Mark Law
AMANDA SCARDAMAGLIA*
‘You never change things by fighting the existing reality. To change something, build a new model that makes the existing model obsolete.’ – Buckminster Fuller (1895 – 1983, undated).
Much of the extant literature on three dimensional (‘3D’) printing has been both enthusiastic and unadulterated, generating predictions of ‘A Third Industrial Revolution’.[1] While this has sparked several optimistic conversations about the subversion of traditional manufacturing,[2] and the dismantling of the distinction between the amateur and the entrepreneur,[3] it has also sparked some more measured discussions about the legal and regulatory aspects of 3D printing.
Intellectual property law has been central to this commentary. On this, the usual intellectual property suspects have featured prominently, with much of what has been written about the intersection between 3D printing and intellectual property dominated by patents, copyright law and designs.[4] This however has been at the expense of any detailed consideration of the application of trade mark laws and laws protecting commercial reputation more generally, which are just as relevant to the debate.[5] This article fills the existing gap by exploring the legal issues that may arise as a result of 3D printing, with a specific focus on the application of trade mark law and its ancillary protection in Australia. In doing so, it draws upon the existing futures discourse[6] but from a legal perspective, forecasting the possible futures for 3D print and trade mark law.
It begins by contextualising the debate with a short history of 3D printing in order to lead into the central focus of the article – that is, the relationship between 3D printing and trade mark law. Particular attention is then paid to the various flashpoints at which 3D printing and trade mark law may collide in light of the projected and expected incumbent response to the trade mark related issues that 3D printing exposes. The normative legal questions that will be raised in the process will also be canvassed.
At this point, it must be said that this article does not set out to present an exhaustive account of all of the trade mark related issues arising from the use of 3D print technology. Rather, it modestly attempts to draw attention to some of the most obvious futures for 3D print and trade mark law at a general level – not all of which are new – as 3D print technology will likely give rise to modern manifestations of familiar trade mark controversies.[7]
With this in mind, ultimately, it is argued that a typically reactive and strictly legal response is likely to be expensive and ineffective for trade mark owners in preventing the unauthorised reproduction of their trade marked goods. It may also simply delay the inevitable. And if 3D printing does become our reality, a reality where consumers become makers, then trade mark owners will eventually have little choice but to embrace the new model of doing things. In the meantime however, we are likely to see incumbents try and use the intellectual property system, and more particularly for the purposes of this article, trade mark law, as a control mechanism – to guard against the rise of 3D printing where that may encroach on their ability to control their brand and their market.
At its most basic level, 3D printing allows users to ‘turn a blueprint into a physical object.’[8] Also known as additive manufacturing or rapid prototyping, 3D printing differs from traditional subtractive manufacturing processes, which usually requires taking a block of material, say plastic, and cutting or taking away from that block until a 3D object is formed. Instead, 3D printing gradually builds up a 3D object, layer by layer, adding filament material to do so.
In terms of the 3D printing process, the first step begins with the design of a blueprint, usually created with a computer aided design (‘CAD’) programme such as AutoCAD or Google Sketchup. Alternatively, a 3D scanner could be used to create a CAD file by scanning an existing object. The CAD file is versatile and can be shared, copied and modified in the same way as other computer files. Once generated, the file can be used as the platform from which to direct the 3D printer as to how to create the object that is the subject of the file, layer by layer using an extruder (fused-filament), chemical agent (binder) or a laser (sintering/melting).[9]
While many, especially media commentators, are attracted (or distracted) into drawing parallels between new and old technologies, when it comes to printing of 3D objects, the relationship between traditional two dimensional (‘2D’) printers or photocopies and 3D printers is largely superficial.[10] Indeed it is easier to describe the disanalogies than the analogies. The first and most obvious point of difference relates to the different printing processes. 2D printers print in two directions, being left to right, whereas 3D printers also move up and down so as to stack layer upon layer until a 3D object is formed. In terms of output, 2D printers use ink while 3D printers are capable of expelling all manner of materials or filament, including plastic, metal, ceramic and cement. 3D printers are also capable of extruding what some might consider exotic materials or at least exotic when compared with traditional or primary manufacturing processes. For instance, the popular press has become fixated on the potential to print edible 3D objects especially chocolate,[11] while bio-fabrication and the possibility of using human cells to print living tissues has also naturally captured the imagination of media outlets worldwide.[12]
Given this, the range of objects capable of being 3D printed is seemingly limitless. And this is where the remarkable potential of this technology lies – in the capacity to print both simple and extraordinarily complex objects, some of which traditional manufacturing techniques are not well suited, or even capable, particularly for bespoke products.
This wide-ranging utility is evident in the recent history of commercial 3D printing.[13] The potential of 3D printing is not limited to its commercial application though, as demonstrated by the RepRap movement, which at its core sought to move 3D printing outside the realms of the factory and into the hands of the individual through the creation of a 3D printer that is self-replicating and capable of printing all of its own parts.[14] The maker movement has gained significant traction over the last decade,[15] with do-it-yourself (‘DIY’) printing becoming more commonplace, especially as the equipment becomes more affordable and the print quality increases, coinciding with the expiry of several early key 3D print patents.[16]
Clearly however there is still a way to go, as most at home printers are not overly sophisticated and there are still issues around quality of output. Even so, it is thought that over time these chinks will be ironed out and the continued evolution of 3D printing will push us closer ‘towards a world in which people do not buy consumer goods any more but instead download them from the web and print them themselves.’[17] The proliferation of CAD files on file sharing sites such as Thingiverse make this prospect all the more real,[18] as does the emergence of 3D print shops, which offer 3D printing services to the everyday person.[19]
While traditionally trade marks comprised of distinctive devices or graphical signs, and later brand names and words,[20] in recent times, it is understood that ‘almost anything at all that is capable of carrying meaning’ can function as a trade mark.[21] As such, the types of signs or subject matter capable of protection have been broadened over time to include colours, scents, sounds and even the décor and environment in which goods and services are sold.[22] The definition of a trade mark has also been extended to encompass shapes.
In most jurisdictions, or at least those that are signatories to the Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPS’),[23] shapes are subject matter capable of registration as a trade mark. This is because TRIPS sets out a broad definition of what constitutes a trade mark so as to include any sign capable of distinguishing goods or services.[24] So, in addition to all of the more conventional signs that are used as trade marks such as logos and brand names, 2D and 3D shapes are also registrable. When this fact is considered in the context of 3D printing, it is clear that trade mark law is ‘ripe for disruption by 3D printing.’[25] It is also ripe with opportunities.
In Australia, shapes including 3D shapes are registrable pursuant to the expansive definition of a sign as contained in the prevailing Trade Marks Act 1995 (Cth), which includes ‘any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.’[26] Thus, as well as making explicit provision for the registration of colours, sounds and scents for the first time in Australia, the Trade Marks Act 1995 (Cth) which replaced the 1955 Act, also expanded registrable subject matter to expressly include aspects of packaging and shapes. The only qualifier for registration is the threshold requirement that the sign must function as an indicator of source or badge of origin such that it is used to distinguish one person’s goods and services from other’s.[27]
There were several motivations for the legislative change in Australia. Of primary significance was the need to ensure Australian trade mark legislation was consistent with TRIPS. Lawmakers were also likely driven by the fact that the absence of any specific statutory protection for 3D marks in the 1955 Act put Australia at odds with other jurisdictions such as the United States[28] but particularly the United Kingdom, which had acted to enshrine TRIPS into its trade mark law in 1994.[29]
The expansion of trade mark law in Australia in this regard sparked a flurry of dialog, centred mostly on the lingering ambiguities surrounding the registration of shapes as trade marks.[30] Central to this dialog is the question of functionality and the registration of monopolised or functional shapes which may have anticompetitive effects. Several jurisdictions have addressed this concern and made provision to specifically exclude from registration what are deemed to be inappropriate applications.
The European Trade Mark Directive (‘the Directive’), and consequently British trade mark law for example, imposes registration restrictions for signs consisting of shapes that result from the nature of the goods themselves, are necessary to obtain a technical result or give substantial value to the goods.[31] This prohibition is justified on the basis of ‘the public interest, in ensuring that natural, functional or ornamental shapes may be freely used by all.’[32] There is an equivalent prohibition under Singaporean trade mark law.[33]
In the United States, the restriction on the registration of 3D shapes is found in the functionality doctrine, which provides that the shape subject of protection must not be essential to the use or purpose of the product or service and not affect the cost or quality of the product or service.[34] More specifically ‘[t]he functionality doctrine prevents trade mark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature.’[35] Critically, the functionality doctrine operates to preclude protection even when the evidence establishes that consumers have come to associate a functional product feature with a single source.[36]
The position in Australia by contrast, is far less restrictive. This is due to the fact there is no functionality doctrine under Australian trade mark law preventing the registration of functional shapes.[37] Nor is there any explicit legislative provision or ground of refusal relating to functional shape trade marks, although such a limitation was included in the Trade Marks Act 1994 (Cth), an Act which never came into operation.[38] Thus, the registration of shape marks in Australia is most likely to hinge upon section 41 of the Act and the mark’s capacity to distinguish, whether that is inherently or factually on account of prior or factual use.[39]
It should be said that the jurisprudence on this point does indicate a reluctance to permit the registration of shapes in Australia where doing so would mean that ‘the proprietor of the mark will be in a better position than a patentee or the proprietor of a registered design, each of whom has a protection limited to the span of a relatively short time.’[40] Even so, the judicial statements made on the issue are purely obiter,[41] and as the issue of functionality is subsumed into discussions of distinctiveness under Australian trade mark legislation, it is still possible that functional shapes could be registrable if they come to acquire secondary meaning and in fact become distinctive of one trader’s goods.[42]
If one can overcome these hurdles for protection (however constrained or otherwise they may be), what does trade mark registration give the registered owner, be it for traditional signs or shapes? Trade mark registration essentially entitles the registered owner to the exclusive right to use the mark, authorise others to use the mark and obtain relief if anybody encroaches on these rights.[43] Critically, the trade mark owner is not granted an unlimited monopoly to use that mark, or shape as the case may be, to the exclusion of all others. Instead, they are only granted the right to use that sign as a trade mark – that is in the course of trade as a badge of origin and stop others from doing the same but only with respect to a sign that is likely to cause confusion.[44] Thus, the alleged infringing mark has to be used to speak to consumers as an indicator of source.[45] Consequently, personal, descriptive or aesthetic use of a shape or the use of a shape for its functional capacity will not ordinarily constitute infringement nor will the purely descriptive use of a registered word mark. Use of a sign that is not confusing will also not infringe the rights of the trade mark owner.[46] Confusion might arise because the marks are substantially identical,[47] or because they are deceptively similar in which case the alleged infringing sign so nearly resembles a registered mark such that it is likely to deceive or cause confusion.[48]
In the event that a trade mark owner does seek to exercise their legislative rights and bring a claim for trade mark infringement, they will not ordinarily do so in isolation. Rather, claims of trade mark infringement are usually argued in conjunction with the various other legal actions which supplement the protection afforded by statutory trade mark regimes, for registered trade marks but also unregistered trade marks in certain circumstances, including shapes and trade dress. For example, laws which guard against false and misleading conduct under the Australian Consumer Law (‘ACL’) are commonly used by traders to supplement the statutory protection available for registered trade marks, including traders with unregistered trade marks, such as product designs.[49] Confusing uses of registered and common law marks may also be captured by the ancillary protection afforded to trade marks and 3D shapes as found in the law of passing off, which has been successfully used to protect a trader’s goodwill or reputation which is tied up in the shape or design of a product, where that indicia has acquired secondary meaning as being distinctive of that trader’s goods and services.[50]
The surge in 3D printing and its take up by businesses around the world means there is a great deal of scope for the exploitation of 3D shapes pursuant to the law relating to trade marks as outlined in the preceding section. As a consequence, there may be a greater uptake in 3D shape trade marks as companies look to expand their intellectual property portfolios and monopolise 3D printing technology for their businesses – the first of several potential future flashpoints involving 3D print and trade marks.[51] This is especially so because trade mark protection offers more flexibility than other intellectual property regimes. So for instance, while design law provides a limited monopoly period (usually for a maximum 10 years),[52] trade mark registrations can be renewed perpetually so long as the mark is still in use.
Trade mark law may also be an appealing alternative to copyright protection, as statutory trade mark law gives the owner the certainty of registration, which copyright cannot afford, at least in those jurisdictions where there is no copyright registration system.[53] The ability to perpetually renew trade mark registrations also means that the period of protection may outstrip the monopoly afforded by copyright, so long as the trade mark is still in use,[54] and is still distinctive.[55]
Of course the opposite may turn out to be true. And instead of seeing a shift towards shapes and trade dress registration, it may be that 3D printing results in a shift away from the use of these types of signs. This is based on the hypothesis that the unauthorised use of shape marks will dramatically increase as a consequence of 3D printing (a matter that will be discussed later) such that ‘product configurations, without word marks or corresponding logos should become less valuable.’[56]
Time will tell whether this reality eventuates. Imagining, at least in the interim, there is somewhat of a rush in the use and registration of shapes and trade dress as a reflection of the present interest in 3D print, there are various ways in which companies might make the most of the trade mark system when it comes to 3D printing and 3D shapes. The recently announced collaboration between Hershey’s and 3D Systems provides an indication of how things might play out in practice,[57] with this announcement shortly following the company’s success in registering the shape of its well-known chocolate bar as a trade mark in the United States.[58]
Given chocolate and confectionary products are already popular subjects of shape-based trade mark registrations around the world but especially in Australia,[59] there are some real opportunities for these businesses to capitalise on their monopolies and carve out an exclusive space in the 3D printing chocolate market. Of course, these opportunities extend beyond the realms of the manufacturers of chocolate and confectionary as any company who has registered a 3D shape as a trade mark would be able to enjoy the benefits of their monopoly to the exclusion of others.
There are of however consequences that flow from this – and if we do indeed see a growing penchant for shape mark registrations, policy makers and judges will, sooner or later, have to grapple with some prickly policy questions. For a start, 3D printing and the registration of 3D shapes may open up old wounds concerning the function of trade mark law, the rationale for the registration of shapes and other non-conventional signs as trade marks, and the expansion of registrable subject matter more generally. It may even lead to a re-evaluation of the function of the trade mark beyond its economic function as a badge of origin, which is central to the current rationalisation of trade mark law.[60] A shift to shape trade mark registrations away from other modes of intellectual property will also undoubtedly place increased emphasis on the functionality doctrine in the jurisdictions in which it operates, as a gatekeeper to the sanctity of the trade mark system. In Australia, it might shine a light on the long over-due need for Parliament to explicitly exclude the registration of functional shapes, before an opportunistic party tries to take advantage of that fact that ‘there is no clear judicial or legislative statement on the appropriate test for excluding trade marks from registration on the grounds of functionality.’[61]
The other pressing concern that may arise from this circumstance relates to the enforcement of the rights associated with shape marks and trade dress, in an environment where 3D printing is the norm. This includes the inevitable conflict that will arise between rights holders and their alleged infringers as we move towards an economy of things, including shapes, where advances like 3D printing ‘promise to do for a variety of physical goods ... what the Internet has done for information.’[62]
From an enforcement perspective, there are various flashpoints at which 3D printing and trade mark law may collide if 3D printing causes a ‘piracy’ problem for trade marks in the same way the internet has facilitated the current, apparent, copyright piracy scourge. The first flashpoint involves reproducing 2D trade marks on 3D printed objects. That is, at the macro level, trade mark law is implicated in the processes of 3D printing where an object, which includes a trade mark, is copied using a 3D printer. This would only be an issue in a commercial context, as trade mark infringement is generally limited to uses of a trade mark in trade or commerce that are confusing. Thus, printing a ceramic mug on a 3D printer which includes the Coco-Cola dynamic ribbon device, which is a registered trade mark, would likely constitute trade mark infringement, where those mugs were sold commercially. Ancillary liability under the heads of law discussed in the previous section would also likely follow, especially if the use of that device was likely to cause confusion and lead consumers to think that the mug was an authorised or licensed product of The Coca-Cola Company. The same however cannot be said if the mug were printed for personal use. This is because it would almost certainly be a use which is not captured by section 120 of the Trade Marks Act 1995 (Cth). Moreover, there is almost no likelihood of confusion in this instance since ‘[y]ou know you made the product, so there is no chance that you are going to be ‘confused’ about where it came from.’[63]
Claims for infringement might similarly arise with respect to making or printing 3D versions of 2D marks, akin to that seen in Coca-Cola Co v All-Fect Distributors Ltd.[64] This is especially in relation to the 3D reproduction of 2D fictional characters, many of which are registered as 2D trade marks or at least are exclusively associated with particular film and television franchises and their production companies. They are also popular subjects of 3D printed fan art. Typically, these grievances have been framed in terms of copyright infringement, (often necessarily because of the operation of the DMCA)[65] – but claims for trade mark infringement, passing off and misleading conduct may also arise into the future as these laws provide another mechanism for proprietors to censor the unauthorised use of their content. This might be the case especially in Australia given the absence of any DMCA equivalent.
Another flashpoint arises concerning the person designing 3D print files and the platform that makes these files available for download, as well as the commercial entities which seek to take advantage of 3D printing in their own businesses. Imagine for example somebody designs a hubcap for a Mercedes Benz car and makes that design file available for download on Thingiverse. Like the ceramic mug, it may be downloaded by individuals for their own personal use. It might also be downloaded by motor mechanics or smash repairs services, looking for cheap, after market spare parts.
Now to be clear, producing and designing a hubcap that is simply compatible with a Mercedes Benz car is not problematic from a trade mark law perspective per se. Describing it that way on a digital file repository site like Thingiverse is also not problematic. That is, unless the designer made false representations or misleading statements about their affiliation or connection with Mercedes Benz, in which case the ACL would apply as would the law of passing off.[66] Otherwise, most jurisdictions explicitly make allowance for this kind of descriptive use where it is necessary to use a trade mark for the purpose of indicating the intended purpose of a product, in particular as an accessory or spare part.[67] If however, the Mercedes Benz logo is featured on the hubcap and therefore included in the file, the matter becomes more complicated. For the motor mechanic who prints the trade marked hubcap and sells it to their clients, this will probably amount to trade mark infringement as there has been use of the mark in commerce. Ancillary liability may also arise. The platform facilitating this commercial use and the designer responsible for uploading the file may also be implicated for enabling this, although one would have to establish use of the mark by the platform or designer involved.[68]
The use of registered trade marks in an online environment complicates matters even further, since use for trade mark infringement must occur in Australia. On this, Merkel J observed in Ward Group Pty Ltd v Brodie & Stone plc that: [69]
[t]he use of a trade mark on the internet, uploaded on a website outside of Australia, without more, is not use by a website proprietor of the mark in each jurisdiction is downloaded. However ... if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor has used the mark in that jurisdiction.
Based on this statement, it is uncertain whether a file sharing site such as Thingiverse (which is based in the United States) could be said to be using a trade mark by hosting a design file containing a registered trade mark and making it available to download, or whether the designer themselves may be held responsible.[70] If there is evidence that Australian consumers have downloaded the offending file, that may not be enough to satisfy the requirement that there has been use of a trade mark ‘targeting’ a market in another country.[71] Thus, pursuant to the Ward Group test, a trade mark owner in Australia may have no recourse under the Trade Marks Act 1995 (Cth) against the designer who uploads the file or the file sharing platform. Then again, a lot of time has passed since the Ward Group case, and if the matter were brought before a court today, they may adopt an entirely different approach, one which better reflects the current state of trade and commerce and does not ‘ignore the universal and seamless character of the internet.’[72] Given the case law on this aspect of use is scant and further elaboration has been left wanting, it may only be a matter of time before 3D printing further exposes the requirement of trade mark use in an online context in Australia.
A third flashpoint arises for the person who prints the trade marked hubcap at home and fits the item onto their S-Class Mercedes Benz. This is different from the earlier example involving the ceramic mug bearing the Coca-Cola trade mark, which if only being used privately, would unlikely result in confusion. The public use of the hubcap on the S-Class Mercedes Benz is very different, as there is a risk that the public may believe the hubcap emanated from the trade mark owner. Even so, it may still not be considered to be use in commerce, which is an issue which 3D printing may expose to greater scrutiny. And while the term ‘trade’ has been afforded a broad interpretation, it would be a stretch to say this type of use could properly be referred to as in the course of trade. In any event, this scenario is probably a moot point, in light of the current state of technology, since it is unlikely that consumers will have 3D printers sophisticated enough for laser sintering metal, let alone the technical skills to print spare car parts at home.[73]
The legal issues presented by this hypothetical are more vexed if we take this scenario one step further and instead of fitting the 3D printed hubcaps on a Mercedes Benz vehicle, they are used on a different brand vehicle, such as a Toyota Corolla. Here, Mercedes Benz as the trade mark owner would not so much be concerned with consumer confusion, but with the dilution of their brand and thus may seek redress accordingly, under the doctrine of trade mark dilution.
In a nutshell, dilution protection seeks to protect the prestige of a trade mark and guard against ‘someone’s ability to make a copy and sell it to someone who knows that the good is a copy, because that copying may reduce the artificial scarcity of the good and its ability to be a status symbol.’[74] Thus, somebody who prints an object on a 3D printer bearing a trade mark, which is used on a third party product, as imagined in the above example, will obviously be objectionable from the perspective of the trade mark owner pursuant to the principles of trade mark dilution.
While trade mark owners in the United Kingdom and United States will have a cause of action,[75] this is probably not the case in Australia. There are however, conflicting views about whether section 120(3) of the Trade Marks Act 1995 (Cth) provides some limited form of dilution protection in certain circumstances for owners of well-known trade marks.[76] The fact that nearly two decades after the inclusion of section 120(3) into Australian trade mark law there is no definitive ruling which supports that proposition seems to confirm that trade mark dilution is not a current part of Australian trade mark law.[77] And rightly so, if one accepts that the primary function of the trade mark is an economic function, and that the key harm in which trade mark law seeks to remedy is consumer confusion. Even so, 3D printing may bring this issue to the fore and trade mark owners may seek to use section 120(3) to broaden the ambit of trade mark infringement, particularly since many 3D print uses of trade marks do not fit squarely within the traditional grounds of trade mark infringement.[78]
While the preceding analysis has focused on how 3D printing facilitates the reproduction of 2D trade marks on 3D objects and ipso facto trade mark infringement, 3D printing also makes it possible to reproduce 3D trade marks with ease, and without the permission of the trade mark owner. This is another important flashpoint at which 3D printing and trade mark law will collide, raising the same liability issues as the reproduction of 2D trade marks. And as 3D printing technologies improve and becomes more mainstream at a commercial and consumer level, the above canvassed scenarios may become more common place. Indeed, it may become the norm, and in the same way that modern technology has led to the democratisation of content distribution, 3D prining may very well lead to a democratisation of objects. This might further result in an increase in counterfeit products, although this is very much dependant on the improvements in 3D print quality.
At present, for mass produced items, traditional manufacturing processes are decidedly more efficient than 3D print, but this may change in the future.[79] At a consumer level however, printing personal fashion items and accessories is already a reality.[80] Thus, the ability of consumers to freely download and print their own knock-off designer sunglasses, handbags, jewellery and even furniture may spawn a digital music and movie file sharing equivalent for physical things – an equivalent that may threaten to undermine the entire business model of those particular industries.
As the foregoing discussion has highlighted, there are various enforcement issues trade mark owners must deal with as 3D print technology develops, and consequently, a number of approaches they might take. Firstly, brand owners may choose to respond by strictly and heavy-handedly enforcing their rights (or threatening to do so via cease and desist letters), in order to extend the reach of their monopolies beyond commercial uses and into the homes of 3D hobbyists. They may also seek to play down the significance of the use requirement in order to do so, although past precedent suggests the courts are unlikely to support such an argument, where use of a trade mark for embellishment purposes has been looked upon favourably and not considered to be use as a badge of origin.[81]
As many trade mark uses associated with 3D printing will not fall within the scope of sections 120(1)—(2) of the Act, trade mark owners may look to extend their monopoly in other ways. In particular, the owners of well-known trade marks may embark on a campaign imploring lawmakers for stronger protection of their brands, in the same way as the copyright content lobby have implored Parliament for among other things, tougher penalties against music and movie piracy. With respect to trade marks, the lobbying may extend to greater protection for the owners of well-known marks, including dilution protection, and harsher criminal penalties for wilful trade mark counterfeiting.[82]
Another possibility is that the scorn of trade mark owners may shift to the manufacturers of 3D printers[83] and even ISPs in demanding that they block websites which host allegedly infringing material.[84] This would seem especially probable given that it is highly inefficient for trade mark owners to pursue individuals for trade mark infringement involving the reproduction of 3D and 2D marks using their 3D printers at home. Doing nothing however is not an option, as brands try to preserve the distinctiveness of their trade marks and take control of their intellectual property portfolios.
If past experience and the response of the copyright content industries when faced with the challenges of Internet piracy is anything to go by, all of the possibilities canvassed in this section are a very likely reality. And in the same way that these legacy industries lobbied for greater regulation and an expansion of their legal rights, brand owners may have a similar reactionary response, throwing their weight about and embarking on a litigation binge in the process.[85]
An alternative and more optimistic reality may be that these brands and trade mark owners engage with the public, or at least consumers and the DIY 3D print community by authorising the kinds of activities that would otherwise be legally actionable. They may even choose to make such designs available to consumers as a way to capitalise on the public desire for their products,[86] or include consumers in the 3D print process.[87] There are other opportunities for trade mark owners which do not involve the strict enforcement of their legal rights but may have commercial advantages. In particular, 3D printing offers brands the opportunity to ‘enhance brand power through safety, quality, and ongoing engagement with the company.’[88] Brands can do this by offering authorised 3D print accessory files to respond to those consumers who want a guarantee as to quality and safety. There are some promising examples already emerging where trade mark owners are embracing 3D print,[89] but it remains to be seen whether these are one off initiatives or not.
If trade mark owners do not think more pragmatically about these things, and if 3D printing does evolve to reach even a fraction of its potential, in time, there is a risk that the likelihood of consumer confusion may be totally eroded. In fact ‘[t]here will be less, or perhaps no, reason for consumers to think that any popular trade mark [or trade mark] observed outside of a store was made by the brand owner.’[90] Thus, in ten years’ time or even sooner, an equally valid conclusion may be that products that look similar are in fact, homemade,[91] obfuscating the risk of confusion and consequently the ability to make out a case of trade mark infringement, passing off and misleading and deceptive conduct – all of which are predicated on the notion of confusion.
So how should policy makers respond to this crossroads, if at all? It would seem that calls for wide-sweeping legislative reforms to respond to the emergence of 3D print technology are premature.[92] With respect to trade marks, legislative reform which would mark a departure from the primary economic underlying policy that justifies trade mark protection in Australia would be unwise. In particular, any calls for the introduction of dilution protection into Australia (or a broad reading of section 120(3)) should be met with caution for the same reasons. It may however be a good time to re-evaluate the role of non-conventional trade marks and the need for a specific exclusion for functional marks. Further consideration should also be given to the scope of secondary trade mark liability in Australia, a matter which was referred to briefly in this article, but which is severely underdeveloped in case law and in the academic literature. The jurisdictional issues alluded to would also benefit from further analysis.
While there are some uses to which 3D printers can be put which may infringe the rights of trade mark owners, this is mostly at the perimeters. So although some commercial uses may impinge on the rights of trade mark owners, personal uses are less controversial. That is not to say that such uses are not objectionable to trade mark owners, who are concerned not just with consumer confusion but with the dilution of their brand and controlling all corners of their market. We have seen the rhetoric used by incumbent companies who see 3D printing not as an opportunity but as a threat. This rhetoric is often followed by calls for an expansion of intellectual property laws to further entrench their rights in an attempt to restrict the continued use of new and emerging technology. When it comes to the intersection of trade mark law and 3D printing, there is no reason to expect anything different. 3D printing therefore, is shaping up to be the next battleground for intellectual property law overreach, with trade mark law set to play a pivotal role.
* Senior Lecturer, Swinburne Law School. The author wishes to thank the anonymous referees for their thoughtful and considered feedback. Thanks to Dan Hunter, Dean Lusher and Angela Daly for their comments on an earlier draft and to the participants at the Oxford/UNSW IP Roundtable WIP event. This research was supported by a Swinburne Centre for Transformative Innovation Research Fellowship.
1 The Economist, A Third Industrial Revolution (21 April 2012) <http://www.economist.com/node/21552901> (29 May 2015). Further see: N Hopkinson and R J M Hague (eds), Rapid Manufacturing: An Industrial Revolution for the Digital Age (John Wiley & Sons, 2005); New Scientist, ‘3D Printing: Second Industrial Revolution is Under Way’ on New Scientist (Special Report) (1 August 2011) <http://www.newscientist.com/special/3D-printing> (29 May 2015); Christopher Barnatt, 3D Printing: The Next Industrial Revolution (7 November 2014) ExplainingTheFuture.com <http://www.explainingthefuture.com/3dp_book.html> (29 May 2015). Another theme that dominates the literature is that of unknown potential, with several possible futures for 3D printing forecast. On this see: Thomas Birtchnell and John Urry, ‘3D, SF and the Future’ (2013) 50 Futures 25, where the authors draw on science fiction in ‘visioning [sic] the potential economic and social consequences of 3D printing.’
[2] See for example: Tim Mazzarol, 3D Printing: The Game Changer for Future Manufacturing (10 July 2012) The Conversation <http://theconversation.com/3d-printing-the-game-changer-for-future-manufacturing-8151> (29 May 2015).
[3] Chris Anderson, Makers: The New Industrial Revolution (Crown Business, 2012) 18.
[4] As to patents see for example: Daniel Harris Brean, ‘Patents to Combat Infringement via 3D Printing: It’s No ‘Use’’ (2013) 23(3) Fordham Intellectual Property, Media & Entertainment Law Journal 771. As to copyright see for example: B Rideout, ‘Printing the Impossible Triangle: The Copyright Implications of Three-Dimensional Printing’ (2011) 5(1) The Journal of Business, Entrepreneurship & the Law 161; Michael Weinberg, What’s the Deal with Copyright and 3D Printing? (Public Knowledge Whitepaper, 2013); Lucas Osborn, ‘Of PHDs, Pirates, and the Public: Three-Dimensional Printing Technology and the Arts’ (2014) 1 Texas Arts and Media Law Review 811. On design law see: Tyrone Berger, The 3D Revolution is Upon Us – And Designers Need Better Protection (27 November 2014) The Conversation <http://theconversation.com/the-3d-revolution-is-upon-us-and-designers-need-better-protection-34051> (29 May 2015). For a more general enquiry into the intellectual property implications of 3D printing see: Dinusha Mendis and Davide Secchi, A Legal and Empirical Study of 3D Printing Online Platforms and an Analysis of User Behaviour (UK Intellectual Property Office, 2015).
[5] While there are several works considering the intellectual property implications flowing from 3D printing at large as noted above n 4, the attention afforded to the trade mark related aspects of the debate are somewhat fleeting. Moreover, they are distinctly American and British in flavour. See: Lucas Osborn, ‘Regulating Three-Dimensional Printing: The Converging Worlds of Bits and Atoms’ (2014) 51 San Diego Law Review 553; Simon Bradshaw, Adrian Bowyer and Patrick Haufe, ‘The Intellectual Property Implications of Low-Cost 3D Printing’ (2010) 7 SCRIPTed 5.
[6] See especially Birtchnell and Urry above n 1.
[7] As a consequence, this article does not engage in a detailed assessment of the jurisdictional issues that 3D printing presents or the issues around secondary trade mark liability.
[8] Michael Weinberg, It Will be Awesome if They Don’t Screw it Up: 3D Printing, Intellectual Property, and the Fight Over the Next Great Disruptive Technology (Public Knowledge Whitepaper, 2012) 2.
[9] Birtchnell and Urry, above n 1, 28.
[10] Osborn, ‘Of PHDs, Pirates, and the Public’, above n 4, 813.
[11] See for example: Oliver Wainwright, ‘3D-Print Your Face in Chocolate for that Special Valentine’s Day Gift’ The Guardian (online), 26 January 2013 <http://www.theguardian.com/artanddesign/architecture-design-blog/2013/jan/25/3d-print-chocolate-face-valentines-day> (29 May 2015); Pagen Kennedy, ‘Who Made that Hershey Bar’, The New York Times Magazine (online), 11 January 2013 http://www.nytimes.com/2013/01/13/magazine/who-made-that-hershey-bar.html?_r=0 (29 May 2015).
[12] The Economist, Biofabrication: Fit to Print (6 April 2013) <http://www.economist.com/news/science-and-technology/21575745-new-ways-make-living-tissue-artificially-fit-print> (29 May 2015).
[13] To date, 3D printing has been used to produce fully functional prosthetic limbs: Ashlee Vance, ‘3-D Printing Spurs a Manufacturing Revolution’, The New York Times (online), 13 September 2010 <http://www.nytimes.com/2010/09/14/technology/14print.html?_r=0> (29 May 2015). It has also been used by those in the fashion industry: Rachel Hennessey, 3D-Printing Hits the Fashion World (7 August 2013) Forbes <http://www.forbes.com/sites/rachelhennessey/2013/08/07/3-d-printed-clothes-could-be-the-next-big-thing-to-hit-fashion/> (29 May 2015); Whitney Hipolite, ‘3D Print Fashion’ – Russian Runway Show Features some of the World’s Top 3D Printed Fashion (27 August 2014) 3DPrint.com <http://3dprint.com/13120/3d-print-fashion-show/> (29 May 2015). Controversially, the technology has also been used to make 3D-printed guns: Alexis Kleinman, The First 3D-Printed Gun has been Fired (6 May 2013) Huffington Post http://www.huffingtonpost.com/2013/05/06/3d-printed-gun-fired_n_3222669.html> (29 May 2015); ‘‘Powerful and Here to Stay’: US Firm Slams First 3D-printed Metal Gun’, The Sydney Morning Herald (online), 9 December 2013 <http://www.smh.com.au/digital-life/digital-life-news/powerful-and-here-to-stay-us-firm-claims-first-3dprinted-metal-gun-20131209-2xava.html> (29 May 2015); Andy Greenberg, Have 3-D Printed Guns Evolved into Serious Weapons in Just One Year (15 May 2014) Wired <http://www.wired.com/2014/05/3d-printed-guns/> (29 May 2015). 3D printing technology is also being used to convert digital or ‘liquid’ data about an individual’s body into tangible 3D forms. On this point see for example: Deborah Lupton, ‘Fabricated Data Bodies: Reflections on 3D Printed Digital Body Objects in Medical and Health Domains’ (2015) 13 Social Theory and Health 99.
[14] See R Jones et al, ‘RepRap – The Replicating Rapid Prototyper’ (2011) 29 Robotica 177.
[15] For more on the maker movement see Mark Hatch, The Maker Movement Manifesto: Rules for Innovation in the New World of Crafters, Hackers, and Tinkerers (McGraw-Hill, 2013); Cory Doctorow, Makers (Tom Doherty Associates, 2010).
[16] See for example United States Patent No 4,575,330 (filed 8 August 1984); United States Patent No 4,863,538 (filed 17 October 1986); United States Patent No 5,121,329 (filed 30 October 1989) and United States Patent No 5,204,055 (filed 8 December 1989).
[17] See Bradshaw, Bowyer and Haufe, above n 5, 11.
[18] Thingiverse is an online design file repository, which presents itself as a community for discovering, making, and sharing 3D printable things. See: <http://www.thingiverse.com/> (29 May 2015). For more on the history of Thingiverse see Jarkko Moilanen et al, ‘Cultures of Sharing in 3D Printing: What can we Learn from the Licence Choices of Thingiverse Users’ (2015) 6 Journal of Peer Production <http://peerproduction.net/issues/issue-6-disruption-and-the-law/peer-reviewed-articles/cultures-of-sharing-in-thingiverse-what-can-we-learn-from-the-licence-choices-of-thingiverse-users/> (29 May 2015). Other design file repositories include Shapeways <http://www.shapeways.com> (29 May 2015), Cuboyo <http:www.cuboyo.com> (29 May 2015), MyMiniFactory http://www.myminifactory.com (29 May 2015), Repables <htpp:www.repables.com/> (29 May 2015), Fabster <htppwww.fabster.com/> (29 May 2015) and Yeggi <http://www.yeggi.com> (29 May 2015).
[19] In Australia see: 3D Print Express <http://www.3dpe.com.au/> (29 May 2015).
[20] For more on the evolution of trade marks see Amanda Scardamaglia, ‘The Colonial Trade Mark Regime: Opening Up the Australian Archives on Colonial Trade Mark Registrations’ (2013) 23 Australian Intellectual Property Journal 222, 242–246.
[21] Qualitex Co v Jacobson Products Co, [1995] USSC 27; 514 US 159, 162 (1995).
[22] See for example Fuddrucker's Inc v Doc's B.R. Others Inc, 826 F 2d 837 (9th Cir, 1987) where the Court found that a restaurant’s décor, menu, layout and style of service were protectable trade dress. See also Two Pesos v Taco Cabana, [1992] USSC 108; 505 US 763 (1992). More recently, the Court of Justice of the European Union (ECJ) has confirmed that Apple Inc is able to register the layout of its store as a trade mark. See Apple Inc v Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) (Court of Justice of the European Union, C-421/13, 10 July 2014). The same mark was approved by the United States Patent and Trademark Office (‘USPTO’) on 22 January 2013. In Australia, an application for the same mark was lodged by Apple Inc but was not registered. See Australian Trade Mark Application Number 1401839 and 1041840.
[23] The Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (‘TRIPS’) sets out the minimum standards of protection required for each of the key areas of intellectual property law, and which must be adhered to by each Member State. Critically, TRIPS is a minimum standards agreement, such that Members are permitted to provide more extensive intellectual property protection, but face potential sanction if they fall below these threshold requirements. With respect to trade marks, the key TRIPS provisions are enshrined in pt 2.
[24] Article 15.1 provides that all signs that are distinctive, visually perceptible (or capable of graphic presentation) and not inconsistent with the Paris Convention for the Protection of Industrial Property, signed 20 March 1883 (entered into force 20 March 1883) must be eligible for registration. Such signs include ‘particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs.’ While the non-exhaustive list of subject matter set out in art 15.1 does not explicitly refer to shapes, shape marks nevertheless are accepted to fall within this definition.
[25] Devan R Desai and Gerard N Magliocca, ‘Patents, Meet Napster: 3D Printing and the Digitization of Things’, (2013) 102 The Georgetown Law Journal 1691, 1709.
[26] Trade Marks Act 1995 (Cth) s 6.
[28] In the United States, the Lanham Act 15 USC § 1052 (1946) explicitly provides that a sign shall not be refused registration purely on account of its nature. Accordingly, when it comes to assessing the subject matter of trade mark protection in the United States, it is the source distinguishing ability of a mark, not its ontological status that matters.
[29] In the United Kingdom, and consistent with art 2 of the European Trade Mark Directive (‘the Directive’), a trade mark is defined under s 1(1) of the Trade Marks Act 1994 (UK) c 26 as consisting of ‘any sign capable of being represented graphically particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided such signs are capable of distinguishing the goods of one undertaking from those of other undertakings.’ Pursuant to this definition and the principles set out in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd, Case C-299/99 [2002] 2 Common Market Law Reports 52, a sign (including shapes) cannot be precluded from registration because it is prima facie incapable of acting as a badge of origin. Instead, any determination as to registration is contingent upon the assessment of distinctiveness, whether that be ab initio or through the use which is made of the sign.
[30] In Australia there is a long list of academic papers dissecting the registration of shapes as trade marks in Australia. See for example: Julia Baird, ‘The Registrability of Functional Shape Marks’ (2002) 13 Australian Intellectual Property Journal 218; Patricia Loughlan, ‘The Concept of ‘Sign’ in Australian Trade Mark Law’ (2005) 16 Australian Intellectual Property Journal 95; Jani McCutcheon, ‘Monopolised Product Shapes and Factual Distinctiveness under s 41(6) of the Trade Marks Act 1995 (Cth)’ (2004) 15 Australian Intellectual Property Journal 18; Mark Davison, ‘Shape Trade Marks: The Role and Relevance of Functionality and Aesthetics in Determining their Registrability’ (2004) 15 Australian Intellectual Property Journal 106. Also see Megan Richardson, ‘Australian Intellectual Property Law: The Form/Function Dilemma – A Case Study at the Boundaries of Trade Mark and Design Law’ (2000) European Intellectual Property Review 314; Amanda Scardamaglia, ‘Protecting Product Shapes and Features: Beyond Design and Trade Marks Australia’ (2012) 7 Journal of Intellectual Property Law and Practice 159.
[31] European Trade Mark Directive, arts 3(1)(e)(i)−(iii). Accordingly, Swiss chocolate giant Nestlé was unsuccessful in registering the 3D shape of its chocolate wafer product, the KIT KAT, because the mark was found to have consisted of a functional shape (and was also devoid of distinctiveness). See United Kingdom Trade Mark Application Number 2552692, as opposed by Cadbury UK Ltd (20 June 2013).
[32] A Folliard-Mongurial, ‘Distinctive Character Acquired Through Use: The Law and The Case Law’ in J Phillips and I Simon (eds) Trade Mark Use (Oxford University Press, 2005) [409].
[33] Trade Marks Act (Singapore, cap 332, 2005 rev ed) s 7(3).
[34] Qualitex Co v Jacobson Prods Co, [1995] USSC 27; 514 US 159, 163–164 (1995). This is confirmed at § 1202.02(a) of the Trademark Manual of Examining Procedure (April 2014 ed) (‘TMEP’). The statutory basis to restrict registration on the grounds of functionality can be found in § 2 Lanham Act 15 USC § 1052(e)(5); § 2 Lanham Act 15 USC § 1052(f); § 23 Lanham Act 15 USC § 1091(c); § 14 Lanham Act 15 USC § 1064(3) and §33 Lanham Act 15 USC. § 1115(b)(8).
[35] Qualitex Co v Jacobson Prods Co, [1995] USSC 27; 514 US 159, 164–165 (1995).
[36] See TMEP § 1202.02(a)(ii).
[37] This may explain why the 3D shape for the chocolate wafer product the KIT KAT as discussed in above n 31, was not registered in the United Kingdom, but is a registered trade mark in Australia. See Australian Trade Mark Application Number 849093.
[38] See for example s 39 of the Trade Marks Act 1994 (Cth), now repealed. The Trade Marks Act 1994 (Cth) was hastily enacted by Parliament to meet a deadline imposed pursuant to Australia’s obligations under TRIPS, but it never commenced and was eventually replaced by the Trade Marks Act 1995 (Cth).
[39] See for example: Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60, where an application for the registration of a seahorse shaped chocolate was rejected because the shape was not sufficiently distinctive to qualify for registration under what was then s 41(1) of the Act and would not have had the capacity to distinguish under what was then s 41(5) of the Act.
[40] Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd [2000] FCA 876; (2000) 100 FCR 90, 93 [1] (Burchett J).
[41] See also obiter statements in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks [2002] FCAFC 273; (2002) 122 FCR 494 at [137] where Burchett J observed that ‘[t]he concerns expressed in both Philips v Remington (Aust), FC and Philips v Remington (Eng) about the prospect of trade marks creating monopolies related only to the registration of trade marks that would restrict access to functional features or innovations, and for this reason were well founded.’
[42] Pursuant to s 41 of the Trade Marks Act 1995 (Cth). This is the preferred position put forward in Jani McCutcheon, ‘Monopolised Product Shapes and Factual Distinctiveness under s 41(6) of the Trade Marks Act 1995 (Cth)’ (2004) 15 Australian Intellectual Property Journal 18, where at 33 the author argues that ‘it should be possible to register under s 41(6) the shape of a monopolised product ... provided distinctiveness in fact is established’ and ‘[i]f Parliament considers that, for policy reasons, such signs should nevertheless be prohibited from being registered, then it is submitted that this should be made overt ...’
[43] Trade Marks Act 1995 (Cth) s 20.
[44] In Australia see Trade Marks Act 1995 (Cth) ss 120(1)–(2). In Europe see First Council Directive 89/104/EEC of 21 December 1988 to Approximate the Law of the Member States Relating to Trade Marks, art 5, which has subsequently been replaced by a codified version under the European Parliament and Council Directive 2008/95/EC of 22 October 2008 to Approximate the Law of the Member States Relating to Trade Marks. This has been implemented by s 10 of the Trade Marks Act 1994 (UK) c 26. In the United States see § 32 Lanham Act 15 USC § 1114.
[45] At least this is the case in Australia subject to s 17 of the Trade Marks Act 1995 (Cth) and the principles set out in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1961) 109 CLR 407. The threshold for use in the United Kingdom is much broader such that any use, which takes unfair advantage of, or is detrimental to the distinctive character of the repute of the trade mark will constitute use. See Trade Marks Act 1994 (UK) c 26, s 10. The threshold for use in the United States is somewhat narrower and more aligned to the Australian position.
[46] See Coca-Cola Company v PepsiCo Inc (No 2) [2014] FCA 1287 (3 December 2014).
[47] To determine whether trade marks are substantially identical involves a side by side comparison, taking into account the visual and aural similarities. See Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1961) 109 CLR 407, 414–415.
[48] Trade Marks Act 1995 (Cth) s 10.
[49] See the ACL as set out in sch 2 of the Competition and Consumer Act (Cth) 2010 (which has replaced the Trade Practices Act 1974 (Cth) and in particular s 18 (and the related s 29) which prohibits misleading or deceptive conduct. For a case involving a product design (leather couch) see Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191.
[50] For a classic case of passing off where a trader was able to show its product shape (a plastic lemon shaped container) had acquired secondary meaning without registration and was successful in its claim for passing off against a competitor who had adopted similar shaped packaging, see Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12 (1 January 1990). For a more recent successful case involving the shape of a coffee plunger see Peter Bodum A/S v DKSH Australia Pty Ltd [2011] FCAFC 98; (2011) 92 IPR 222.
[51] Of course, this exploitation possibility has long been available to the manufacturers of 3D objects utilising traditional mass manufacturing methods (at least for as long as 3D shapes have been registrable as trade marks in Australia). The present curiosity and thirst for 3D print technology may however see a renewed, albeit short-lived surge in 3D shape mark applications as some of the enthusiastic ‘early users’ seek to mark out their territory in the 3D print sphere.
[52] In Australia, under s 46 of the Designs Act 2003 (Cth), the term of protection is five years from the filing date of the design application in which the design was first disclosed. If the registration of the design is renewed under s 47, then the term of protection is 10 years from the filing date of the design application in which the design was first disclosed. Compare this to the position in the United Kingdom pursuant to s 8 of the Designs Act 1949 (UK) c 88 and in the United States under the Patents Act (Designs) 35 USC § 173.
[53] Pursuant to the Berne Convention for the Protection of Literary and Artistic Works, signed 9 September 1886, (entered into force 5 December 1887) (‘Berne Convention’) copyright registration is unnecessary as copyright arises as a matter of law. Several Berne Convention members have established voluntary national registration systems for copyright and sometimes also for related rights. In these Member States, registration facilitates the exercise of copyright and related rights, by providing owners with a simple and effective means to clearly establish authorship and/or ownership of rights. While copyright registration systems did exist historically in the Australian colonies, the United Kingdom and the United States, they are no longer operational, although registration is still required in the United States for the purposes of awarding statutory damages.
[54] See Trade Marks Act 1995 (Cth) s 92 where a trade mark can be removed from the register for non-use.
[55] See Trade Marks Act 1995 (Cth) s 87 where a trade mark can be removed from the register where the mark has become generic.
[56] Desai and Magliocca, above n 25, 1710.
[57] See Rachel Park, Big Confectioners want in on 3D Printing as 3D Systems and Hershey Team Up (16 January 2014) 3D Printing Industry <http://3dprintingindustry.com/2014/01/16/big-confectioners-want-3d-printing-3d-systems-hershey-team/> (29 May 2015).
[58] Re Hershey Chocolate and Confectionary Corporation, Serial No. 77809223 (June 28, 2012).
[59] See: Australian Trade Mark Number 706789 for the interlocking triangles used by Kraft Foods Schweiz Holding GmbH for TOBLERONE. Also see Australian Trade Mark Number 706789. Further see Trade Mark Number 706623, being the shape used by Cadbury Enterprises Pty Limited for its FREDDO FROG. Finally, note the failed attempt by Chocolaterie Guylian N.V. to register the shape of a seahorse for its chocolate products, as referred to above n 39.
[60] William M Landes and Richard A Posner, ‘Trademark Law: An Economic Perspective’ (1987) 30 Journal of Law and Economics 266; William M Landes and Richard A Posner, The Economic Structure of Intellectual Property (Harvard University Press, 2003).
[61] Mark Davison, ‘Shape Trade Marks: The Role and Relevance of Functionality and Aesthetics in Determining their Registrability’ (2004) 15 Australian Intellectual Property Journal 106, 111.
[62] Mark Lemley, ‘IP in a World Without Scarcity’ (2015) 90 New York University Law Review 460.
[63] Weinberg, ‘It Will be Awesome if They Don’t Screw it Up’, above n 8, 8.
[64] See Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107.
[65] See for example the furore which arose with respect to a 3D printed Iron Throne iPhone Dock, derived from the cult television series Game of Thrones, in which HBO reportedly issued a take-down notice: 3deres.org, 3D Printing Startup Received Takedown Notice from HBO for IP Infringement (13 February 2013) <http://www.3ders.org/articles/20130213-new-3d-printing-company-received-takedown-notice-from-hbo-for-ip-infringement.html> (29 May 2015).
[66] The platform hosting the misleading content on the other hand, may escape liability. See Google Inc v Australian Competition and Consumer Commission (2013) 249 CLR 435. For a discussion of this case see Amanda Scardamaglia, ‘Misleading and Deceptive Conduct in Australia: Google Inc v Australian Competition and Consumer Commission [2013] HCA 1’ (2013) 35(11) European Intellectual Property Review 707.
[67] In Australia see: Trade Marks Act 1995 (Cth) s 122(1)(c). In the United Kingdom see for example Trade Marks Act 1994 (UK) c 26, s 11(2)(c). In the United States see: § 33 Lanham Act 15 USC § 1115(b)(4).
[68] In Australia, the position of who precisely may be liable for trade mark infringement (primary or secondary) is described as ‘murky.’ See Robert Burrell and Michael Handler, Australian Trade Mark Law (Oxford University Press, 2010) 512. As to platform liability, there is no test case in Australia. Existing international precedent would indicate, at least in the context of keyword advertising, that hosting platforms are unlikely to be liable. See: Google France SARL v Louis Vuitton Malletier SA (C-236/08) [2010] ECR I-02417. The designer of a 3D print file incorporating a trade mark may however be liable as a primary infringer but also further to s 147 of the Trade Marks Act 1995 (Cth) for assisting a person in applying a registered trade mark to goods under s 146.
[69] Ward Group Pty Ltd v Brodie & Stone plc [2005] FCA 471; (2005) 143 FCR 479, 490–91 [43] (‘Ward Group’).
[70] The terms of use of many of these file-sharing sites may limit their liability in this respect, pushing the onus of responsibility back on the user. ‘Thingiverse’ for example would be precluded from any liability by virtue of s 5 of their terms and conditions which provide that users agree to indemnify the company from any claim or demand made by a third party. See: Thingiverse, Makerbot Terms of Use (last updated 14 February 2014) Thingverse.com<https://www.thingiverse.com/legal> (29 May 2015).
[71] This is a test, which some commentators have suggested remains unclear. See: Sam Ricketson, ‘Trade Mark Liability arising out of Internet Advertising’ (2007) 12 Media and Arts Law Review 1, 25; Domenic Carbone, ‘Electronic Commerce and Protecting Intellectual Property on the Internet’ (2009) 37 Australian Business Law Review 239, 248. See more generally Warwick Rothnie, ‘A Bona Fide Offering to the World at Large: (Not) Using Signs on the Internet’ (2006) 17 Australian Intellectual Property Journal 45.
[72] Ricketson, above n 71, 27.
[73] This is especially since research indicates that most consumers use 3D print technology in pursuit of their personal hobbies and for pleasure. See generally Mendis and Secchi, above n 4.
[74] See: Desai and Magliocca, above n 25, 1711.
[75] See s 10(3) of the Trade Marks Act 1994 (UK) c 26 and in the United States see Federal Trademark Dilution Act of 1995, Pub L 104–98, 109 Stat 985 which amended the Lanham Act 15 USS § 1051 (1946).
[76] See for example: Michael Handler, ‘Trade Mark Dilution in Australia?’ (2007) 29 European Intellectual Property Review 307 giving a narrow interpretation of the section. Contra Maurice Gonslaves and Patrick Flynn, ‘Dilution Down Under: The Protection of Well-Known Trade Marks in Australia’ 28 (2006) European Intellectual Property Review 171, who argue that s 120(3) of the Trade Marks Act 1995 (Cth) is an explicit anti-dilution provision.
[77] In fact there have been no successful cases decided under s 120(3) in Australia, let alone any judicial clarification on its precise scope. Only a handful of cases have made reference to the connection between 120(3) and dilution, although this has done nothing to clarify the issue. See: Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12; (2000) 202 CLR 45, 66. Also see: Coca-Cola Co v All-Fect Distributors Ltd (1998) 43 IPR 47, 65. The other decided cases have all been interlocutory applications and have mostly only shed light on what it means to be the owner of a well-known trade mark. See for example: San Remo Macaroni Company Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842; (2000) 50 IPR 321.
[78] It is worth observing that, in its current form, s 120(3) would not assist trade mark owners in stopping the unauthorised reproduction of their goods or trade marks, as it only applies to cases where the defendant is using a trade mark with respect to goods and services which are unrelated to the class of goods or services to which the plaintiff’s trade mark is registered. As such, the use of the Mercedes Benz trade mark on a Toyota Corolla vehicle would not fall under s 120(3), for the same reason.
[79] This has been acknowledged in a report into consumers and 3D print which found that 'taking into account accessibility to materials, sophisticated printing machines, costs and economics for the average user, the impact of this technology will not be felt among the general public for a few years to come.' See: Mendis and Secchi, above n 4, 45.
[80] And indeed a preference for 3D print enthusiasts, with fashion and jewellery among the most popular categories/tags used on 3D printing online sharing platforms. See: Mendis and Secchi, above n 4, 32.
[81] See Top Heavy Pty Ltd v Killin (1996) 34 IPR 282. On this further see Adam Open AG v Autec AG Case (C-48/05) [2007] ECR I-01017) which involved the use of the registered Adam Opel logo on the radiator grill of an accurately scaled replica model of the Open Astra V8 coupe. The ECJ confirmed that there would not be infringing use if the average consumer understood the use of the mark to indicate that this was a model of an Opel car, as the origin function of the mark would not be affected. When the matter went back to the referring court, they held that the use of the original logo on the goods did not fulfil any of the functions of the trade mark as the relevant consumer would merely regard the logo device affixed on the defendant's model car as an exact copy of the mark that the original car had affixed in exactly the same space. Consequently, the mark would only be seen as a reproduction of a detail of the original car. Relevant consumers would not regard it as a reference to the trade origin of the toy car.
[82] As it stands, the criminal penalties for trade mark infringement can be found in pt 14 of the Trade Marks Act 1995 (Cth) and includes offences of applying a registered trade mark to goods knowing that the mark was registered or being reckless as to whether the mark was registered under s 146. Penalties include fines and imprisonment for up to five years.
[83] Arguably manufacturers of 3D printers may be liable pursuant to the criminal trade mark offences and in particular ss 146–7 of the Trade Marks Act 1995 (Cth).
[84] Cartier, Montblanc and Richemont v BSkyB, BT, TalkTalk, EE and Virgin (Open Rights Group intervening) [2014] EWHC 3354 (Ch) provides a glimpse into this kind of future. Here, the Cartier group was successful in its application for a blocking injunction against five of the United Kingdom’s major ISPs, requiring them to block six websites selling counterfeit goods.
[85] The response of the content creators has been simply summarised in this way in Lemley, above n 62, 497-498.
[86] Desai and Magliocca, above n 25, 1710 (footnote 99).
[87] Drawing on a recent initiative involving Hasbro, who appointed ‘Super Fans’ to create ‘Super Art’ inspired by their iconic MY LITTLE PONY products. See The Shapeways Blog Hasbro & Shapeways Enable 3D Printing Fan Art with SuperFanArt’ on The Shapeways Blog (21 July 2014) <http://www.shapeways.com/blog/archives/16759-hasbro-shapeways-enable-3d-printing-fan-art-with-superfanart.html> (29 May 2015).
[88] Desai and Magliocca, above n 25, 1713.
[89] See: 3ders.org, Adidas pops up in London with giant shoebox & 3D printing (30 January 2014) <http://www.3ders.org/articles/20140130-adidas-pops-up-in-london-with-giant-shoebox-3d-printing.html> (29 May 2015). Also see: Sandra Helsel, Adidas Incorporating 3D Printing into Footware Design’ (2 December 2014) Inside 3D Printing <http://inside3dprinting.com/adidas-incorporating-3d-printing-into-footware-design> (29 May 2015).
[90] Desai and Magliocca, above n 25, 1711.
[91] Ibid.
[92] This is consistent with the findings of a review commissioned by the UK Intellectual Property Office which considered that a premature call for legislative and judicial action in the realm of 3D printing could stifle creativity and innovation, and impede on the right of manufacturers and content creators to protect their livelihoods. See Mendis and Secchi, above n 4, 43.
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